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Intellectual Property Matters – October 2014

Intellectual Property Matters – October 2014

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09/10/2014

A stitch in time…

In another trade mark case involving a fashion designer and a retailer, this time from […]

In another trade mark case involving a fashion designer and a retailer, this time from Germany, it is reported that the Hamburg Appeal Court has upheld the findings of the lower Hamburg District Court that the distribution of certain models of jeans would infringe Levi Strauss’ trade mark rights in the stitching pattern appearing on the back pockets of its jeans. The defendant, New Yorker, is alleged to have sold jeans bearing similar stitching.

The Court ordered New Yorker to pay compensation. It is also reported that Levi Strauss requested as compensation a flat fee of €50 per jeans, notwithstanding that New Yorker apparently sold the jeans for less than €50 per pair.

This is not the first time that Levi Strauss has brought trade mark infringement proceedings and it is becoming well known for fiercely protecting its trade mark registrations. Defendants in the United States in recent years have included Dolce & Gabbana and Abercrombie & Fitch, each of whom allegedly infringed the Levi Strauss stitching mark.

Application for registration of Northern Soul as a trade mark

The applicant, Retro Bag Shop, applied for registration of a figurative mark with the text […]

The applicant, Retro Bag Shop, applied for registration of a figurative mark with the text NORTHERN SOUL KEEP THE FAITH for goods in Class 18, namely imitations of leather, travelling bags, handbags, rucksacks, purses, wallets, flight and shoulder bags.

Registration of the mark was opposed relying on the absolute grounds of refusal set out in section 3(1)(d) of the Trade Marks Act 1994, on the grounds that the trade mark consisted exclusively of “signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”. The opponent maintained that the term “Northern Soul” was descriptive of a musical genre which had been in use for around 40 years. Similarly, the clenched fist symbol, which emanated from the Black Power movement, had been prevalent for about 40 years. On that basis the opponent argued that the logo should be free for use by all traders and not be monopolised by the applicant.

In his evidence, the opponent maintained that the logo had first come to prominence in the 1970s when it was used on posters to advertise Northern Soul events, and that it was worn by attendees as a badge of allegiance. Since then the logo had come to be used on a variety of goods, notably badges, t-shirts and bags. The evidence of other witnesses was also to the effect that the logo, and the expression “Keep the faith” were used by those involved in Northern Soul and were not the creation of a bag manufacturer – it was a badge of allegiance to the Northern Soul movement.

The hearing officer concluded that there were a number of businesses selling bags bearing the logo before the applicant’s filing date and that those traders must have viewed the mark solely as a generic badge of allegiance to the Northern Soul movement. The sign, in the opinion of the hearing officer, was part of the common “language” of Northern Soul fans.

The case is interesting for showing the relevance and importance of the views of ordinary consumers, as distinct from people within the trade, and as an illustration of how a word that has achieved generic use in the trade, will not be capable of registration as a trade mark.

Cookies as registered Community designs

In Biscuits Poult SAS v OHIM [1] the design in issue had been registered as […]

In Biscuits Poult SAS v OHIM [1] the design in issue had been registered as a Community design for “cookies” in 2009. The applicant for invalidity challenged the registration on the basis that the design in question was not new and lacked individual character. It further argued that its appearance was dictated by its technical function and therefore was not capable of registration as a Community design as design features “solely dictated by technical function” are excluded from registration.

The challenge was successful before the OHIM Board of Appeal, from where the proprietor appealed to the General Court.

The General Court rejected the proprietor’s submission that the Board had incorrectly refused to consider the internal appearance of the design of the cookie – namely its layer of chocolate filling – and, as a consequence, had failed to consider the differences between its design and the earlier designs adduced by the applicant for invalidity. It agreed with the Board that, since the chocolate filling only became visible when the cookie was crumbled, the filling did not relate to the appearance of the cookie.

The Court rejected a further submission of the proprietor, namely that the chocolate filling became visible during the “normal use” of the cookie. The concept of “normal use” is relevant to the determination of novelty and individual character; these are judged on the part of the design which is visible during normal use. The Court held, however, that the concept of “normal use” was relevant only to complex products and a cookie did not fall into that category.

The Court concluded that the design of the cookie did not produce on an informed user, being a regular consumer of that type of cookie, a different impression from that produced by the earlier designs, consideration being given to the freedom of the cookie’s designer.

While the idea of cookie designs being the subject of litigation may raise a smile, the case is illustrative of several of the key issues applicable to Community designs registration, in particular the “technical function” exemption, the relevance or otherwise of the design’s internal appearance and the impression on the informed user.

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[1] Case T-494/12

Luxury fashion items and trade mark infringement

We reported earlier in the summer that the fashion designer Karen Millen had succeeded in […]

We reported earlier in the summer that the fashion designer Karen Millen had succeeded in an action for infringement of unregistered Community design right against the retailer, Dunnes. Intellectual property disputes involving retailers and fashion are all too common; another one to have troubled the courts in recent months is Thomas Pink Ltd v Victoria’s Secret UK Ltd [1].

Thomas Pink Limited, which has been trading by reference to the name Thomas Pink and PINK in London since 1984, brought a trade mark infringement claim regarding the use of the trade mark PINK, which it had registered as a Community and UK trade mark. Victoria’s Secret, which began trading in the USA in the 1970s and has more recently opened a number of retail outlets in Europe, sells a range of products including fragrances, toiletries, bags and clothing on which appears the work PINK.

In his judgment, Mr Justice Birss held that consumers in Europe might come to associate the claimant, a manufacturer of traditional luxury shirts, with the “sexy” mass-market goods and underwear sold by the defendant, to the detriment of the repute of its mark. In the judge’s words, consumers “will not see the CTM in the same way as before. The claimant’s trade mark will be associated with a mass market offering, reducing its luxurious reputation. There is every risk that this will lead consumers not to buy products from the claimant when they otherwise would have done”.

Mr Justice Birss also explained there would be a detriment to the distinctive character of the claimant’s mark. In time, the defendant’s use of the word PINK not in a descriptive sense but as a badge of origin would cause the claimant’s trade mark to lose its ability to act as a designation of the claimant as the origin of its goods.

The judgment contains a number of important lessons on accurately portraying the use of the marks, the balanced approach that the court should take in assessing whether the specification for which the mark is registered is fair, and how a mark might acquire distinctiveness even if the mark used is not identical to the mark registered. The judgment is also particularly interesting in that it shows us that confusion between trade marks may arise even where the brands in issue are targeting different sectors of the market, and even where the brands have co-existed for years in another jurisdiction (i.e. USA) without confusion.

[1] [2014] EWHC 2631 (Ch)

Polo on horses and polo on bicycles – similar or dissimilar?

In Polo/Lauren Company v OHIM [1] the intervener applied for registration as a Community trade […]

In Polo/Lauren Company v OHIM [1] the intervener applied for registration as a Community trade mark of a figurative sign depicting a bicycle polo player in respect of Class 18 (travel bags and umbrellas), Class 25 (clothing, footwear and headgear) and Class 28 (gymnastic and sporting articles not included in other classes).

The opponent, Polo/Lauren, opposed the application on the basis of two earlier trade mark registrations; a Community trademark depicting a polo player and a national trade mark, registered in Austria, also depicting a polo player. Polo/Lauren’s appeal from the Opposition Division was dismissed by OHIM’s Board of Appeal on the basis that the signs in issue were dissimilar overall and there was no likelihood of confusion.

Article 8(1)(b) of the Community Trade Mark Regulation [2] provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if – because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks – there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. In the opinion of OHIM’s Board of Appeal, because the marks were dissimilar, the threshold for successful opposition set out in Article 8(1)(b) was not reached.

The General Court disagreed, reaching the opposite conclusion on similarity. Having regard to the visual and conceptual similarities between the signs in issue, the General Court considered that the signs had a degree of similarity, and found that the Board’s finding of the bicycle depiction being the dominant element was inaccurate, as this did not consider the mark as a whole. Subsequently, the Board’s finding that there was no likelihood of confusion was premised on the erroneous conclusion that the signs in issue were dissimilar.

The lesson from this case is how difficult it is to second-guess what a hearing officer, OHIM or court will determine as regards similarity between competing signs. Whilst decision-makers will do their best to apply objective criteria, there is inherently a degree of subjective analysis and what looks similar to one person might well look dissimilar to another.

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[1] T-265/13
[2] Regulation (EC) No 207/2009

Registrability of shape marks

Shapes are capable of registration as a trade mark under the Trade Marks Directive [1]. […]

Shapes are capable of registration as a trade mark under the Trade Marks Directive [1]. However, under Article 3(1)(e) of the Directive, a sign cannot be registered if it consists exclusively of (i) the shape which results from the nature of the goods themselves; (ii) the shape which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods.

In Hauck GmbH & Co KG v Stokke A/S [2], the Dutch court referred questions relating to the refusal to register shape marks under Article 3(1)(e) of the Directive. The reference arose out of an application for a declaration of invalidity of the claimant’s TRIPP TRAPP trade mark, a Benelux mark, which consisted of the shape of a children’s chair. The applicant for invalidity had argued that the shape resulted from the nature of the chair itself (ground (i) above) and that it gave substantial value to the goods (ground (iii) above).

The Court of Justice of the European Union (the CJEU) ruled that:

the ground of refusal relating to shapes that result from the nature of the goods extends to signs that consist exclusively of the shape of a product, which includes essential characteristics inherent to the generic function or functions of the product and characteristics which consumers might look for in the products of competitors. In the opinion of the CJEU, “Reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape which would be suited to the use for which those goods are intended”
the ground of refusal relating to shapes that give substantial value to the goods extends to signs that consist exclusively of the shape of a product with several characteristics, where each characteristic may give the product substantial value. The concept is not limited purely to the shape of products having only artistic or ornamental value. In other words, the ground relating to substantial value can cover shapes even if they have functional as well as aesthetic purpose
the three grounds of refusal in Article 3(1)(e) cannot be applied in combination. The grounds are to be applied independently of one another. Conversely, registration cannot be refused under Article 3(1)(e) unless at least one of the three grounds is fully applicable.

The validity of the trade mark will now be determined by the Dutch court in the light of the CJEU’s ruling.

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[1] 2008/95/EC
[2] Case C-205/13

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Alan Harper, Senior Associate, Intellectual Property & Trade Marks at Walker Morris LLP

Alan Harper
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